Intellectual property strategy

Types of Intellectual property

Maximize protection of your intellectual property (IP) by strategically employing patents, trademarks, copyrights, and trade secrets.  

In theory, the different categories of IP (utility patents, provisional patents, design patents, copyrights, trademarks, and trade secrets) are distinct. However, in practice, these can somewhat overlap. Each is a type of IP protection tool. Sometimes one tool is clearly superior.  Sometimes more than one tool will work. But using the wrong tool can produce unsatisfactory results.

Patents (utility patents) cover useful, original, and not obvious ideas for gadgets, physical objects, compositions of matter (e.g. drugs), and the like. These must be filed, carefully reviewed, and ultimately disclosed to the public. They can last for up to 20 years if maintenance fees are paid.

Provisional patents are essentially a short-lived (1-year) first draft of a utility patent.

Patents (design patents) cover the ornamental appearance of a functional item. These also must be filed, reviewed, and ultimately disclosed to the public. These last for 15 years, maintenance fees not required.

Copyrights cover original written material, music, images, movies, and the like. These can last over a lifetime (e.g. lifetime of the author plus 70 years) after initial publication. Registration not initially required, but eventually needed to enforce rights.

Trademarks cover the words, symbols, or packaging associated with certain classes of products and services in commerce.  Registration, disclosure to the public, and review required. These have no lifetime limit, so long as the owner periodically sends in proof of continued use in commerce.

Trade Secrets cover undisclosed commercially useful information not generally known to the public or trade. These can include unpatentable items such as recipes, as well as un-copyrightable items such as lists. No lifetime limit, provided that the secret does not get exposed.

Sometimes it is possible to get better protection by handling the IP under multiple categories. Examples include:

  • Using a non-publication request to keep the IP secret while pursuing a US patent
  • Converting a utility patent drawing to a later design patent
  • Filing user interface IP as a utility patent, design patent, and copyright
  • Filing a distinctive design as both a design patent and a trademark
  • Filing a distinctive image (or fragment of literature) as both a copyright and a trademark

There are some tricky aspects to the multiple category approach as well, these include:

  • Cases where international IP rules are different from US rules
  • Trying to use a provisional patent for a later design patent
  • Shifting copyright (non-functional) vs patent (functional) and design patent (ornamental appearance of functional item) distinctions
  • Competitors using your assertions for one IP category against another IP category

So “mind the gap”, but it pays to think broadly and strategically here.

Utility patents

Caveman inventor
Wheel: both a machine and a method!

Utility patents are the best way to protect most inventions. But to get one, you have to convince a USPTO examiner that your application is worthy.

Utility patents are by far the most common type of patent.  In fact, the term “patent” almost always means “utility patent”.  Almost all of the famous patents in history – the telephone, light bulb, transistor, airplane, motion picture, are utility patents.

What is a utility patent?  Under US law, utility patents are the type of intellectual property (IP) that covers: “a new and useful process (e.g. a method of doing something), machine, manufacture, or composition of matter (e.g. a drug), or a new and useful improvement thereof.

Note the underlined new. To get a utility patent application allowed (granted), the applicant has to prove to skeptical USPTO examiners that the invention really is new, and not just a trivial (obvious) tweak to older prior art.

Here “useful” means that the invention must have some actual benefit (isn’t clearly impossible or too illegal) and does more than just being decorative.

Utility patents are often the hardest type of IP to get. USPTO examiners usually attempt to use prior art to reject new applications. They expect applicants to rebut their rejections, often several times, before allowing the application.  This process is called patent prosecution. If the applicant does not successfully rebut the various rejections, the application goes abandoned.

Legally, a US patent gives the owner the right to sue to collect royalties/damages and/or to attempt to block someone else from practicing the invention in the United States, but not internationally. The exact scope of legal protection is determined by the patent claims.

Types of utility patents:  US utility patents often start as US provisional patents.  If you want any international patents, you must file these within 12 months.

Patent valuation: Patent valuation is dictated in part by the desires of others to practice the invention, the effectiveness of the patent in thwarting these desires (what the claims cover), and the invention’s potential market size. If a particular patent covers an invention that no one else wants to practice, that patent isn’t going to be worth much!

Assuming maintenance fees are paid at 3-4, 7-8, and 11-12 years after issue, US utility patents typically last for 20 years from initial filing, sometimes more if the USPTO has taken too long to review the application. After that, they expire (go abandoned) and become public domain.

Provisional patent applications: thoughts and suggestions

Ducttape
Provisional patents are a bit like duct tape…

Provisional patent applications: US patent law allows inventors (applicants) to file informally written disclosures with the US patent office.  These informal disclosures, called “provisional patent applications” (often abbreviated as “provisional patents”, “provisional applications”, or even just “provisional”), represent an excellent opportunity to quickly and inexpensively start the process of obtaining a patent.

Provisional patents are not usually examined. Instead they are merely stored in the USPTO databases for a year.  They are then discarded, unless within that year, the inventor then files a regular utility patent application that references that provisional application.  If this is done, the USPTO keeps the provisional stored forever.

Provisional patents are often useful because later, during examination of the subsequent regular utility patent, the inventor can reference the provisional patent to overcome examiner rejections (e.g. overcome other patent’s priority dates, supply additional detail, and so on).

Regular patents have detailed requirements with respect to format, figures, and claims, and tend to be expensive to file.  By contrast provisional patents have almost no format requirements, and they are inexpensive to file.  Almost anything that can be put onto paper (e.g. a PDF format) can be filed as a provisional application.  As a result, provisional patent applications can be as simple as a single page photograph of a napkin sketch, or as complex a fully developed 100+ page formal patent application.  The USPTO will cheerfully accept either one of these.

The lack of format requirements can be very helpful.  Many a patent application has been saved by the fact that the inventor had earlier filed something, such as a research paper or user manual, essentially as-is, as a provisional.  Although such items would never be accepted as a regular utility patent application, informal provisional patent submissions can be a quick way to put important information on the record.

This is the good news.  The bad news is that many a patent application has been lost because the inventor first filed an inadequate provisional application, and then operated under a false sense of confidence that he or she was protected by that inadequate provisional application.

The dangers of an inadequate provisional application are both delayed and subtle.  At first everything is fine.  Then, typically about 1-3 years after the inadequate provisional has been filed, trouble can start.

For example, suppose that the USPTO examiner rejects on the basis that someone else has filed another non-provisional (regular utility) patent ahead of the applicant’s regular utility patent.  Under today’s rules, almost the only way to establish that the applicant invented first is to cite the earlier filed provisional patent, and state precisely which parts of the provisional application prove that the inventor was first.

If the examiner reviews the provisional and agrees, then the provisional has been successful and the inventor will hopefully go on to successfully get the patent.  But if the examiner reviews the provisional and says, “I don’t see the invention here”, then the provisional has likely failed, and the inventor may never be able to prove that he or she invented first.

Three different provisional strategies:

Personally, I think that it is useful to think about three different categories of provisional patents.  These categories are: 1) quickly file your existing write ups; 2) file a rough draft of a regular utility patent; and 3) file a complete utility patent, but do so as a provisional patent rather than as a regular utility patent.

Category 1:  quickly file your existing write ups.  These can be existing papers, PowerPoint presentations, handouts, whatever.  The argument in favor of this approach is that this is the quickest way of getting something on the official patent record.  This may also be a quick way of filing a lot of supplemental information.  Worst case, an improperly thought out provisional can later be abandoned.  My personal views are that this approach is better than nothing, but it is not without pitfalls.

Category 2:  file a rough draft of a regular utility patent.  Many provisional applications are filed by inventors and small companies operating on a limited budget.  Here the goal is to try to quickly file something that is relatively decent, but also try to save money while a new idea is being evaluated.  Here, as a compromise between cost and quality, one way to go is to produce a rough draft of a utility patent, following the standard utility patent format, which provides some important structure.  This approach tries to capture a good chunk of the value of a full patent, while keeping costs at about 50% of a standard patent, by focusing time on a few key draft claims, informal but adequate figures, and at least the most important technical aspects of the disclosure.

Category 3:  file a complete utility patent, but as a provisional application.  In this third type of situation, funding may not be an issue, but the inventor thinks there is a possibility that they will make additional improvements to the invention over the next year.  Here a complete and detailed utility patent can be written, but is instead filed as a provisional patent rather than a regular utility patent.  This provisional application can then be “aged” for up to a year.  If there are no changes, the original provisional can then simply be refiled as a full utility patent.  Otherwise the changes can be dialed in, and an updated version filed as the full utility patent.  An additional advantage of this Category 3 approach is that it can effectively increase the lifetime of the final patent by up to a year.

A few other nuances – if you are interested in foreign patent filings, realize that the 12 month foreign filing deadline starts ticking from the time you file your provisional application.  Thus the 12 month provisional expiration deadline, and the US and foreign patent filing deadlines, all fall on the same day.

Design patents

For stronger design patents – less detail can give you broader coverage, so consider turning some solid lines into broken lines.

design patent
Design patents can be like the disappearing Cheshire Cat

On the surface, design patents – a patent that covers the ornamental appearance of an article of manufacture, seem simple. File multiple drawings showing your design from multiple angles – often all six sides of an imaginary cube, as well as in perspective. If (under a famous court case called the Egyptian Goddess test), an ordinary observer (familiar with the prior art designs of similar products) will confuse someone else’s product with the patented design, then there is infringement.

This raises interesting questions of pattern recognition. The problem is often explained by analogy to the Cheshire Cat from Alice in Wonderland.  How much of the cat do you need to see in order to identify it as a Cheshire Cat?

In a design patent, the parts that are required are shown in solid lines, and the optional parts are shown in broken lines.  As more and more solid lines are turned into broken lines, the design becomes more general, but of course at some point, the design then becomes too general to be unique or even recognizable.  See “A Guide to Filing A Design Patent Application” for more information.

When broad coverage of a design is desired, consider filing multiple versions (or alternatively continuations) of a design patent.  Narrower but safer versions can have more solid lines; in riskier but broader versions, replace the less essential solid lines with broken lines.  Perhaps a subset or outline of your product is distinct enough to warrant design patent protection?  If you think that your design may have multiple distinct sections, consider putting in broken lines to show these sections in the initial filing, since the USPTO won’t let you do it later.

Compared to utility patents, design patents are relatively inexpensive to file, and relatively easy to get.  However again, the design patent is only for the artistic and non-functional aspects of the design. Design patents now have a 15 year lifetime, and no maintenance fees are required.

Many countries also accept international design patents as well, but you usually only have six months to file.

A few more tips — design patent examiners have a well-developed ability to detect inconsistencies between drawings and/or ambiguity in drawings.  Problems can often be avoided by first making good quality 3D CAD files, and then making these 3D CAD files available to the patent attorney.

The hidden complexity of trademarks

Registered Trademark
Registered Trademark

Trademarks help protect providers of products and services from unfair competition. An example of unfair competition is when company “A” sells a product or service, and business competitor “B” sells a competing product or service in such a manner as to confuse company “A” customers into accidentally buying from company “B”.

Three general principles of trademark law can be summed up as “don’t try to trademark the normal names of a product or service”, “a trademark only has meaning in the context of a particular class of product or service”, and “use it or lose it”.

Trademarks that too closely resemble the normal name of a product or service will be rejected as being “generic“. By contrast, a trademark that is “fanciful”, — that has no obvious correlation to a product or service, will often be accepted. Trademarks falling in between these two extremes, which may be “descriptive” of the underlying product or service, often will be put on probation in a “secondary trademark register” for 5 years. After 5 years of use in trade, absent objection by outsiders, the descriptive name can then be granted full trademark status on the “primary trademark register“.

Note that the word “Trademark” has the word “trade”. This begs the question, trade in what? Under both US and international trademark law, products and services are shoehorned into a limited number of different trademark classes. Although recycling the same names within a class is generally not tolerated, the same names can often be reused for alternate products or services between classes, so long as there is not confusion. The USPTO generally examines trademarks on a per class basis.

Trademarks are granted on a “use it or lose it” basis. Although it is possible to reserve trademarks (at least fanciful trademarks) for up to a few years on an “intent to use” basis, ultimately to get the trademark, you need to provide proof that the mark is actually being used in commerce by submitting a “specimen”. This is often a photograph of sales receipts, website purchase pages, and the like, showing that the trademark name is actually being used in real trade.

There are many other complexities of trademark law as well. Searches can be tricky, because the underlying legal standard for trademark infringement is “possibility of confusion”, and not “the same spelling“. Unregistered common law trademarks are another potential problem. Thus merely avoiding other trademarks with identical spelling is often not enough. Alternative spellings, word prefixes, word suffixes, and other name variations can often cause problems if potential customers might be confused.

Copyrights and creativity

macaca_photograph300
Macaca self-photograph. No human creativity, so no copyright?

Copyright protection requires that a work have at least a minimum amount of human creativity, but the laws are vague as to what this minimum is.

Legally, US copyright protection is provided for information (typically preserved in a non-transitory medium) that has at least a small element of a human author’s own creativity. Courts have held that mere facts and ideas alone can’t be copyrighted. The amount of creativity can be very small, but it isn’t zero.  For example, using human judgment to select and compile facts according to personal criteria often qualifies, and an author’s annotations of facts may also qualify, but routine alphabetical sorting is not enough (Feist Publications v. Rural Telephone, 499 US 340, 1991) .

From an engineering or mathematical perspective, these rules may look vague. This is in part because copyright concepts date back hundreds of years, back to the early days of printing presses, and have evolved slowly over time through various laws and court decisions. However copyrights are big business, and copyright law enforcement tends to be efficient and harsh. So like them or not, the rules are important.

One area where the rules are fuzzy is short works, such as short sections of text or individual photographic images. What is the minimum work (creative information) that might get copyright protection?  The rules are not uniform throughout the world, and here we are discussing US laws.

Short text:  Very short text fragments are often considered too trivial (de minimis) for copyright protection, but the court will consider originality here, and more originality gets better protection. Although there is no minimum word-count cut off, text fragments of 11 words or less at the “news article” level of originality are often considered non-infringing.

Individual photographs:  Again the law requires a small amount of human creativity for copyright protection.  The US copyright office will not register works produced by non-humans, and lower court cases are consistent with this decision.  Additionally, exact copies of public domain work (Bridgeman Art Library v. Corel Corp.) are also exempt from copyright. Otherwise, the courts often ignore the creativity requirement.  This raises some interesting questions for future cases. However, unless the law changes, assume that copyright applies to nearly all human-produced photographs, no matter how repetitious, trivial or otherwise non-creative.

There are other copyright exceptions.  Federal Government work is often not copyrightable.  Further, under “fair use”, there can be additional exceptions where it is OK to reproduce another’s copyrighted work.  Fair use rules are complex and will be the topic of another discussion.

Trade Secrets

secrets
“Sshh” by Deborah Azzopradi

Consider trade secrets, especially when your commercially important secrets are unsuitable for patent or copyright protection.

Consider the formula for Coca-Cola and its “natural flavorings”, which dates back over 100 years.  Even if the formula could have been patented (unlikely), the patent would be long expired.  The formula might not be even eligible for copyright since it is a list.  In any event, a copyright by now would be both expired and useless since a copyright is only for the printed words.  However as a closely guarded trade secret, the formula remains valuable (the trademark, of course, is almost priceless).

In addition to recipes, trade secrets can include production methods, marketing methods, computer software, and the like. Pretty much any information that gives a business competitive advantage, and is not generally known, is a potential trade secret.

Trade secret protection is very narrow – unless you can prove to a court that you carefully guarded the secret, and someone with access to the secret then misappropriated the secret, you are out of luck. If someone figures out the secret by other means (e.g. reverse engineering), there is no protection, even for Coca-Cola.

However if you can convince the court that trade secret theft occurred, you can request injunctions (e.g. block disclosure), damages (your economic harm caused by the theft), and possibly even seizure of materials and/or attorney fees.

Until recently, trade secrets were only handled at the state level.  However in May 2016, the federal Defend Trade Secrets Act of 2016 (DTSA) was signed into law.  Trade secret theft can now be handled in either state or federal court. Trade secret theft can now be charged under both civil and even criminal law.

So if you are doing a startup, think about which of your non-commonly known information gives you a competitive edge. Where appropriate, apply for patents and trademarks, and register copyrights to prove copyright ownership.  For the rest, although some disclosure may be required for marketing and fund-raising, try to limit this disclosure, and take positive steps (e.g. restriction of access, nondisclosure agreements) to preserve not-generally-known information that is competitively important.

Startup IP due diligence

Maat
Maat – Egyptian goddess of truth

Startup investors know that they are mostly investing in just your IP.  So get your IP ownership situation under control before due diligence starts.

What does a startup investor get for his money? Startup companies are really just a bundle of information (usually ideas), people (founders, contractors, consultants), and things (tangible property, cash). A startup’s “things” will usually have minimal value. The people can walk out the door at any minute. So all that an investor may actually get for his money is some sort of ownership option in the information – the startup’s intellectual property (IP).  Prudent startup investors thus often conduct a fair amount of due diligence on this “IP”.

A startup’s IP can be viewed as being a mixture of alleged inventions (e.g. actual or potential patents), alleged copyrights, alleged trademarks, and alleged trade secrets.  At least some of this information may still only exist in the minds of the founders, contractors, and consultants. What is potentially real here, and what is not?

Sophisticated investors also know that according to our IP laws, unless actions are taken to protect the IP, the IP may either still belong to the individual that created it; or it may have become public domain.  Investors also know that startups often don’t fully understand IP law.  Has that intriguing startup already accidentally lost its key IP?  Was it missing essential IP to begin with?  This is why investors want IP due diligence studies.

Some ways that IP can be missing or lost include failure to obtain written IP assignment contracts, inadvertently placing IP into the public domain, and reliance on IP owned by someone else.

Failure to obtain written IP assignment contracts: IP assignment agreements should be obtained from anyone who has materially contributed to the company’s IP. Don’t assume that just because you paid for something, your company owns that IP — you often don’t. Try to do these IP assignments up front, because the longer you wait, the more leverage the other party has. For example, they could make unreasonable demands, or deny assignment altogether.

Inadvertently placing IP in the public domain: For patents, assume that anything you publish before a patent application is filed can be used against you, and be careful to update your patent filings as your technology advances. For trade secrets (i.e. important, not-generally known information which is often not patentable), take active steps to restrict access, require confidentiality agreements, and of course never publish this at all.

Reliance on IP owned by someone else: For patents, consider prior art searches to reduce the chances that you are infringing on other patents. Make sure you have listed the right inventors on any patent applications. For copyrights, check the status of your software licenses, and that you and your contractors are not copying other work. Avoid using names that might confuse customers from related companies, since this may cause trademark problems. For trade secrets, stay away from inside knowledge (not generally known in your field) that you or your contractors may have obtained from other companies.

Remember that from an IP due diligence perspective, if you can’t prove you did things right, the assumption will probably be that you didn’t.  So keep your documentation on file.

International patents

World map by Japinderum (CC BY-SA 3.0) license
PCT international patent treaty countries

Applying for international patents: Most countries maintain their own separate patent and trademark offices, and typically (Europe being a partial exception), patents operate within national borders.  Thus a US patent, for example, covers just the US.

The Paris Convention: The process of extending a patent application to cover multiple countries was worked out by several international treaties. One important treaty, which is still in effect, was the 1880’s era Paris Convention. This established that, for example, a foreign patent office will recognize the priority of a US utility patent application (or provisional patent application) for up to 12 months after its initial filing date.

This was a good start, but it often takes more than 12 months to determine if a new invention is commercially important. It is very expensive to file patent applications in many different countries. So for many applicants, 12 months just wasn’t long enough.

The Patent Cooperation Treaty: To extend this time, in the 1970’s the Patent Cooperation Treaty (PCT) was enacted. This treaty is a bit complicated. Think of it as a temporary “holding tank” for patent applications. The key idea is that if you file a PCT application within 12 months of the filing date of the original patent application, you can extend your ability to then file international patents to 30 months from the filing date of the original patent application.

After 30 months from the filing date of the original patent application, however, you then need to make some tough decisions. It typically costs thousands of dollars to file (i.e. enter the national phase) in each separate country. So unless the invention is really very promising, often applicants either continue on only in the US, or else only file nationally in a few select countries.

The Patent Prosecution Highway: Typically, each local (national) patent office will then want to examine the patent application itself. This is both expensive and duplicative of resources. To help streamline the process, in the late 2000’s, various Patent Prosecution Highway (PPH) agreements were initiated, typically on a bilateral (country-to country) basis. Here, if a patent application has claims allowed by one (PPH) country’s patent office, the applicant can petition to have these claims accepted by other participating PPH offices. The US participates in the PPH, as do a number of other countries. The PPH is great when it works, but it is presently a patchwork of agreements rather than a comprehensive international treaty. So view the PPH as being somewhat in the “pilot” or “beta” stage.

Design patent infringement

Three-way visual comparison test
Three-way visual comparison test

Design patent infringement isn’t based on exact copying. Rather the test is if an “ordinary observer” will see “substantial similarity”. 

Determining if a particular design of interest does, or does not, infringe upon another design patent is an interesting gray area of intellectual property law.

According to the 2008 Federal Circuit ruling in Egyptian Goddess, Inc. v. Swisa, Inc.” 543 F.3d 665: to infringe, a given design does not have to be an exact copy of another design patent.  Rather, the question is one of “substantial similarity” under the “ordinary observer” test.

Great — what the heck is this, and how does this test determine design patent infringement?

The underlying idea is that customers looking to purchase a design patented product “Y” should not be deceived by similar looking product “X”.

So as a practical matter, you should run this test using ordinary observers. Realize that if you personally are involved, it may be difficult for you to be fully objective.  In this case, you are probably not a suitable “ordinary observer”.  Instead, determine if disinterested outsiders see “substantial similarity“.

Although sometimes the differences between a given design and a particular design patent may be so great that no further comparisons are necessary, sometimes the designs are close. Here a “three-way visual comparison test” can be useful. This test can be done by making a composite illustration showing the patented design on one side, the “accused design” (i.e. the design being investigated) in the middle, and other designs representing the closest prior art on the other side.

Essentially it is a pattern recognition problem.  The idea is to use the prior art examples to instruct the ordinary observers as to how much variation is typical in this field.  Then the ordinary observer can determine if the design of interest is overly close to the design patent of interest, or not.

This sort of approach was used to compare handheld blender designs in Braun Inc. V Dynamics Corp. 975 F.2d 815, in 1992.  As you can see in the above image, the “accused design” was visually much closer to the patented design than it was to the closest prior art. The court determined that the “accused design” was in fact infringing.

The best times to consider these issues are before you start producing and selling a new design. So if you have a new design that you are worried about, get the opinion of some neutral outsiders ASAP.  Indeed, consider running some focus groups as appropriate. If things look too close, consider making some further design changes, and trying again.